PTAB

IPR2024-00287

Dropbox Inc v. Motion Offense LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Processing a Data Object Identification Request in a Communication
  • Brief Description: The ’520 patent relates to systems and methods for processing a "file request," wherein a first user can request a file from a second user over a network. The claimed invention covers the workflow of displaying interfaces to create the request, sending a first message to the second user, allowing the file upload, and sending a second message back to the first user to provide access to the uploaded file.

3. Grounds for Unpatentability

Ground 1: Obviousness over Riepling - Claims 9, 10, 14, and 15 are obvious over Riepling.

  • Prior Art Relied Upon: Riepling (Application # 2013/0046833).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Riepling discloses a content sharing service where a registered user sends a digital invitation requesting a data upload from another user. Riepling’s system was alleged to teach the core limitations of independent claims 9 and 14, including displaying interfaces at a first node to receive a file description and recipient email address, generating a "first message" (a digital invitation) with a link, allowing a second user to upload a file via that link, and sending a notification message back to the first user.
    • Motivation to Combine: While this is a single-reference ground, Petitioner contended that a person of ordinary skill in the art (POSITA) would have found it obvious to rearrange the order of Riepling’s user interface elements (e.g., collecting upload parameters before contact information). This was presented as a simple design choice between a finite number of predictable options for improving user workflow.
    • Expectation of Success: A POSITA would have had a high expectation of success in implementing minor UI modifications to Riepling’s system, as it would involve basic programming principles to achieve a predictable and improved user experience.

Ground 2: Obviousness over Riepling and Manzano - Claims 11-13, 16, and 22-24 are obvious over Riepling in view of Manzano.

  • Prior Art Relied Upon: Riepling (Application # 2013/0046833) and Manzano (Application # 2010/0005138).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted Riepling taught the base file request system as detailed in Ground 1. Manzano was added to teach the limitations in dependent claims related to a client-based file explorer. Specifically, Manzano was argued to disclose creating a "representation" of a remotely stored file (e.g., a "ghosted" or semi-transparent icon) within a local file explorer interface. This representation visually indicates the file is not stored locally until the user interacts with it to initiate a download.
    • Motivation to Combine: A POSITA would combine Riepling and Manzano to enhance the user experience by not automatically downloading uploaded files to the requester's device. This modification would conserve local storage and bandwidth and give the user more control over their files, a recognized benefit in the field of file sharing.
    • Expectation of Success: The combination was characterized as a straightforward implementation of known concepts from the same field of endeavor. A POSITA would have expected success because Riepling’s system was designed to be extensible and Manzano’s use of ghosted icons was a known technique to manage remote files.

Ground 3: Obviousness over Riepling, Manzano, and Meisels - Claims 11-13, 16, and 22-24 are obvious over Riepling and Manzano in view of Meisels.

  • Prior Art Relied Upon: Riepling (Application # 2013/0046833), Manzano (Application # 2010/0005138), and Meisels (Application # 2012/0278404).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground supplemented the combination of Riepling and Manzano with teachings from Meisels. Where Riepling’s notification message was argued to be deficient, Meisels was introduced to explicitly teach sending a notification email (the "second message") that includes a hyperlink to access an uploaded file, rather than sending the file itself as an attachment.
    • Motivation to Combine: A POSITA would be motivated to incorporate Meisels’s teaching to create a more efficient and secure system. Sending a link avoids issues with email attachment size limits, prevents the proliferation of multiple file copies, and allows for centralized permission management, all of which were known benefits.
    • Expectation of Success: Petitioner argued that combining these references would yield predictable results. Implementing a link-based notification in the Riepling/Manzano framework was a routine programming task, and using links in emails to access shared content was a well-established practice.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Garcia (Patent 9,633,125). Garcia was added to address specific claim limitations related to displaying uploaded files and folder structures within both a web-based interface and a client-based file explorer interface.

4. Arguments Regarding Discretionary Denial

  • Petitioner stipulated that if the Board institutes this inter partes review (IPR), it will not pursue in a parallel district court proceeding the same invalidity grounds presented here, nor any grounds that could have reasonably been raised in the IPR. This Sotera-style stipulation was offered to weigh against discretionary denial under the Fintiv factors.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 9-16 and 22-24 of the ’520 patent as unpatentable.